1STDIBS.COM, INC. v. Marc Rossi
Claim Number: FA1306001506048
Complainant is 1STDIBS.COM, INC. (“Complainant”), New York, USA. Respondent is Marc Rossi (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <1stdibs.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2013; the National Arbitration Forum received payment on June 21, 2013.
On Jun 21, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <1stdibs.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@1stdibs.net. Also on June 24, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity
2. Policy ¶ 4(a)(ii): Respondent’s Rights & Legitimate Interests.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
3. The disputed domain name has been registered and used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of conducting an online store for the sale of artwork and furniture.
2. Complainant has registered the 1STDIBS mark with the United States Patent
& Trademark Office (“USPTO”). See Reg. No. 3,593,643 registered on Mar. 24,
2009 (filed Feb. 1, 2007). Complainant has further obtained registration of the 1STDIBS mark with the European Union’s Office for the Harmonization of the Internal Market (“OHIM”). See Reg. No. 7,576,721 registered on Dec. 23, 2009 (filed Feb. 2, 2009).
3. Respondent registered the <1stdibs.net> domain name on April 18, 2009.
4. Respondent has used the Disputed Domain Name to redirect Internet users to a website featuring generic links to third-party websites that promote goods and services, some of which compete with those of Complainant’s business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims that it uses the 1STDIBS mark to host an online store for artwork and furniture. Complainant also states that it uses the <1stdibs.com> domain name to provide “game-changing” antique and vintage retail services. Complainant has registered the mark with the USPTO. See Reg. No. 3,593,643 registered on Mar. 24, 2009 (filed Feb. 1, 2007). Complainant has further obtained registration with the OHIM. See Reg. No. 7,576,721 registered on Dec. 23, 2009 (filed Feb. 2, 2009). The Panel finds that Complainant has established Policy ¶ 4(a)(i) rights through these two major trademark agencies. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s 1STDIBS mark. Complainant claims that Respondent has registered the <1stdibs.net> domain name, which is an identical infringement of its 1STDIBS mark. Complainant submits that the addition of the generic top-level domain (“gTLD”) is irrelevant, leaving nothing but Complainant’s registered mark. The Panel agrees that the gTLD is irrelevant—this domain name is a textbook example of an identical domain name under Policy ¶ 4(a)(i). See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”)”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s 1STDIBS trademark and to use it in its domain name;
(b) Respondent has then used the disputed domain name to resolve to third-party websites that promote good and services, some of which compete with those of Complainant ;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent has not been known by the <1stdibs.net> domain name. Complainant also argues that Respondent is not affiliated, sponsored, or endorsed by Complainant to make any authorized or licensed use of the 1STDIBS mark. The Panel notes that the WHOIS information provided denotes one “Marc Rossi” as the registrant of the domain name. The Panel concludes that the record provides no basis for finding that Respondent is commonly known by this domain name under Policy ¶ 4(a)(i). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument);
(e) Complainant next contends that Respondent is using the <1stdibs.net> domain name to host generic hyperlinks, presumably so that Respondent can amass advertising revenue. The Panel notes that the disputed domain name resolves to a website dominated by advertisements that range from “Mid Century Furniture” which is in the same field as Complainant’s business to “Earn Your MBA 100% Online” and other links relating to different services. See Complainant’s Ex. C. The Panel finds that the use of the <1stdibs.net> domain name for purposes of hyperlink advertisements is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008) (“Respondent maintains a website at <msnmessenger2008.com> which appears to sell Complainant’s products and services and contains links to other third-party websites. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name
was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent is employing the fame of Complainant and its marks to confuse Internet users into believing the <1stdibs.net> domain name is affiliated with Complainant. Complainant maintains that Respondent illegitimately enjoys increased web traffic, and heightened advertising revenue, as a result of his use of the complete 1STDIBS mark in his domain name. Some of the advertisements feature the types of goods that Complainant offers in its antique retail business and others are in different fields, but the impression is given overall that Complainant is affiliated in some way with the goods and services being promoted by these links which it is not. The domain name’s website is filled with hyperlinks to an array of competing, related and unrelated goods and services and this clearly constitutes bad faith. See Complainant’s Ex. C. The Panel therefore finds find that Respondent’s decision to register and use the <1stdibs.net> domain name is in bad faith under Policy ¶ 4(b)(iv) as the inference must be drawn that it was Respondent’s goal to confuse Internet users into viewing his hyperlink farm and click on the hyperlink advertisements. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Secondly, Complainant argues that Respondent’s registration of an identical domain name, which features advertisements such as “Mid Century Furniture” indicates that Respondent was well aware of the 1STDIBS mark, and the products associated with the mark, prior to registering the domain name. Complainant argues that Respondent also had constructive notice of Complainant’s rights in the marks. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark and all the circumstances shown by the evidence, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ISTDIBS mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <1stdibs.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 24, 2013
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